T 1966/16 - Remittal under RPBA 2020

Key points

• The  Board remits the case to the Examining Division, after finding that: “it follows from the above that the sole ground for the refusal set out in the decision under appeal, namely a lack of inventive step over D6, is not justified.”
• “The Board identified several potential deficiencies in present claims 1-7 with respect to Articles 83, 84 and 123(2) EPC, as explained in the communication of the Board pursuant to Article 15(1) RPBA”
• “Article 11 RPBA 2020 provides that the Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so.
• The Board holds that such special reasons are apparent in the present case because the examining division has not taken an appealable decision on essential outstanding issues with respect to Articles 83, 84 and 123(2) EPC. As recalled in Article 12(2) RPBA 2020, the primary object of the appeal proceedings is to review the decision under appeal in a judicial manner. This principle would not be respected if the Board were to conduct a complete examination of the application. Consequently, in the present case, Article 11 RPBA 2020 does not entail that the board should carry out a full examination of the application for compliance with the requirements of Articles 83, 84 and 123(2) EPC for which no decision of the first instance exists yet.”
• As a comment, the Board could cancel oral proceedings by remitting the case. On the other hand, the present application is an Euro-PCT application with filing date in 2009. If the formal issues identified by the Board lead to a refusal by the Examining Division and further appeal, it may still take another 5 years until the decision on the application is final. 

EPO T 1966/16 -  link



Accordingly, the finding of lack of inventive step over D6 must be set aside.

2. Remittal to the examining division

2.1 It follows from the above that the sole ground for the refusal set out in the decision under appeal, namely a lack of inventive step over D6, is not justified.

However the Board identified several potential deficiencies in present claims 1-7 with respect to Articles 83, 84 and 123(2) EPC, as explained in the communication of the Board pursuant to Article 15(1) RPBA (see paragraph 2. of the communication dated 29 October 2019). Although the examining division raised related objections of lack of clarity and sufficiency of disclosure in the communication dated 9 May 2014, the decision under appeal does not address these issues. It is unclear whether the examining division regarded the objections as overcome.

2.2 Under Article 111(1) EPC, the Board may in the present case either proceed further with the examination of the application, in particular with respect to Articles 83, 84 and 123(2) EPC, or remit the case to the examining division for further prosecution.

Since the present appeal was pending on 1 January 2020, the revised version of the RPBA applies (OJ EPO 2019, A63), subject to the transitional provisions set out in Article 25 of said RPBA. In particular Article 11 RPBA 2020 is applicable. Article 11 RPBA 2020 provides that the Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so.

The Board holds that such special reasons are apparent in the present case because the examining division has not taken an appealable decision on essential outstanding issues with respect to Articles 83, 84 and 123(2) EPC. As recalled in Article 12(2) RPBA 2020, the primary object of the appeal proceedings is to review the decision under appeal in a judicial manner. This principle would not be respected if the Board were to conduct a complete examination of the application. Consequently, in the present case, Article 11 RPBA 2020 does not entail that the board should carry out a full examination of the application for compliance with the requirements of Articles 83, 84 and 123(2) EPC for which no decision of the first instance exists yet.

Under these circumstances, the Board considers it appropriate to allow the appellant's request for remittal of the case to the examining division.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution.

T 0899/14 - Plausibility

Key points

• This a rather straightforward case of a medical patent application being insufficiently disclosed due to lack of plausibility of the efficacy of the claimed medical use in the application as filed. 
• The Board: “in order to meet the requirement of sufficiency of disclosure, the efficacy of the product to be manufactured in the claimed therapeutic indication must therefore be disclosed”. 
• “Contrary to the [applicant's] view, it is thus not sufficient merely to describe an administration regimen to be followed, without any evidence of the therapeutic efficacy of the proposed treatment.”
• “The question to be answered is whether the information presented in the examples can render the alleged efficacy credible, or at least establish its initial plausibility”
• The Board concludes that the examples did not render the alleged efficacy credible. 
• The Board: “While results of clinical trials or animal studies are not always necessary to establish sufficiency of disclosure, a mere verbal statement in the application is not enough to establish even the initial plausibility of an alleged therapeutic benefit.”
• The post-filed evidence showing the efficacy is therefore disregarded by the Board.
• “Otherwise, this would result in a patent being granted for a technical teaching which was achieved, and thus for an invention which was made, at a date later than the effective date of the patent. [] Therefore, the additional evidence provided in document D13 cannot be taken into account in favour of the sufficiency argumentation of the appellant.”

EPO T 0899/14 -  link

2.5 According to the established case law of the Boards of Appeal, where a medical application is claimed in the so-called "Swiss-type" format (as in the present instance), attaining the claimed therapeutic effect is regarded as a functional technical feature of the claim (see for example T 0609/02 of 17 October 2005, Reasons: 9). In order to meet the requirement of sufficiency of disclosure, the efficacy of the product to be manufactured in the claimed therapeutic indication must therefore be disclosed, unless this was already known to the person skilled in the art.

2.6 Contrary to the appellant's view, it is thus not sufficient merely to describe an administration regimen to be followed, without any evidence of the therapeutic efficacy of the proposed treatment.

2.7 Hence, the issue of sufficiency of disclosure revolves around the question of evidence of the efficacy of the treatment protocols defined in the independent claims for the prevention of pulmonary dysplasia.

T 2473/17 - A long sentence

Key points

• The applicant files a new request in appeal. The Board does not admit it. 
• The Board, in one sentence: “Considering i) that the new main request was filed to overcome the objection of lack of novelty over D1 (i.e. the ground of refusal for the application) and thus cannot be regarded as a reaction to an unexpected development in the proceedings,
  ii) that the added wording "continuously curved" has no explicit basis in the application as filed and, by the Appellant's own admission, can only be derived from the figures, and thus gives rise to issues under Article 123(2) and 84 EPC (in particular, what should be understood by "continuously curved" serpentine: with straight portions or not, with a constant radius of curvature or a variable one , etc.) which would require further discussion, and
  iii) that D1 (figure 2) apparently also shows a serpentine divider having a smooth, continuously curved shape, without cusps or angles introducing discontinuities, i.e. that D1 apparently discloses what can be regarded as a continuously curved serpentine divider (in its broadest interpretation, this term would not exclude straight line portions), whereby the amendment is not such as to prima facie overcome the objection of lack of novelty over D1 in respect of the previous second auxiliary request Version 1, the Board takes the view that, having regard to the current state of the proceedings and for reasons of procedural economy, the new main request is not to be admitted to the appeal proceedings pursuant to Article 13(1) RPBA.” (indents in original). 
• As a comment, drafting a judgement in basically one sentence with a number of "considering" statements is the traditional (and current) French way of drafting judgments, but the EPO normally does not use it..

EPO T 2473/17 -  link

Reasons for the Decision

1. The appeal is admissible.

2. The Appellant's main request was filed during oral proceedings after novelty over D1 was discussed in respect of all pending requests at the beginning of the oral proceedings, after deliberation of the Board, and after the Chairman informed the Appellant that the subject-matter of claim 1 of all requests - including the second auxiliary request Version 1, filed with letter dated 13 September 2019 - lacked novelty in view of D1.

T 2574/16 - It is normal for claims

Key points

• The Board explains that the requirements of clarity (Art. 84) and sufficiency of disclosure do not mean that the claims must be restricted to the examples.
• “the Board notes that the claim is indeed not limited to one simple way of simulating an operational element and in fact encompasses elaborate simulations going beyond any of the examples disclosed in the application as filed. But this in itself is not a problem of lack of clarity or insufficiency of disclosure.”
• “In fact, it is normal for a claim to define the scope of protection in terms that positively define the essential features of the invention. Any particular embodiment falling within the scope of the claim may have further characteristics that are not mentioned in the claim or disclosed in the application (and could even constitute a patentable further development).” 

EPO T 2574/16 - link

3.6 As to the example referred to by the Examining Division, the Board notes that the claim is indeed not limited to one simple way of simulating an operational element and in fact encompasses elaborate simulations going beyond any of the examples disclosed in the application as filed. But this in itself is not a problem of lack of clarity or insufficiency of disclosure. In fact, it is normal for a claim to define the scope of protection in terms that positively define the essential features of the invention. Any particular embodiment falling within the scope of the claim may have further characteristics that are not mentioned in the claim or disclosed in the application (and could even constitute a patentable further development).

In the present case, any method falling within the scope of claim 1 includes a step of modifying at least one graphical element to thereby simulate an operation of at least one operational element. This simulation may be very elaborate but may also be very simple. The contribution of this step to the claimed invention is essentially that some simulation takes place, not that such simulation is made possible for the first time. Given at least one operational element of an operational system, the skilled person would have no difficulty in implementing some simulation in the form of at least one modification to at least one graphical element. The contribution made by the step is therefore sufficiently disclosed.

3.7 Hence, the Examining Division's reasons for refusing the main request are unconvincing.

New Rfees7 and the ADA

• The February OJ was recently published and contains no amendment of the ADA.
• The arrangements for deposit accounts (ADA) point 4.1 provides that “the ten-day fail-safe provision of Article 7(3)(a) and (b) RFees, second half-sentence, and Article 7(4) RFees apply mutatis mutandis to replenishment payments.” (OJ 2019 sp4)
• However, the ‘the ten-day fail-safe provision’ is abolished with effect of 1 April 2020 (OJ 2020 A3), in the sense that it is no longer ‘ten days’.
• Rfees 7 is the rule about fee payments made with bank transfer, in case the payer initiates the bank transfer before the expiry of the period, but the money only actually enters the EPO bank account after the expiry of the period. ADA 4.1 provides that the rule applies (more or less) also for replenishment payments to deposit accounts. 
• With effect of 1 April 2020, there is no longer a surcharge payable in case the bank transfer was initiated less than 10 days before the expiry of the period. If the bank transfer is initiated on the last day of the period and the money is received by the EPO later, this is considered to be a timely payment.
• Amended Article 7(3) neither has a sub-paragraph A anymore nor a subparagraph B. Moreover, the rule no longer refers to any ten-day period.
• Perhaps the EPO President of the Office could amend the ADA in time before 1 April 2020. Though it sometimes appears that the EPO department in charge of the ADA is completely separate from the department that looks after the Rfees. 

T 1265/15 - Remitting the case (examination appeal)

Key points

• The Board remits this case, finding that there is a ‘special reason’ within the meaning of Article 11 RPBA 2020 in this examination appeal.
• The application was refused by the Examining Division as being not novel over D1. The Board comes to a different interpretation of D1, finding the main request therefore to be novel over D1.
• "The board judges it appropriate to remit the case to the examining division for further prosecution, so that it has the opportunity to reassess the invention in view of the other prior art on file. "
  
• (repost with correct formatting)
• 05.05.2020 - corrected that the Board decided to remit the case.

EPO T 1265/15 - link


6. Remittal, Article 111(1) EPC 1973

6.1 As set out above, the subject-matter of claim 1 of the main request is novel in view of the disclosure of D1, thus overcoming the reasons for refusal given in the decision. The board also finds that claim 1 involves an inventive step in view of D1.

6.2 As the board bases these findings on a different interpretation of D1 to that in the decision, the board judges it appropriate to remit the case to the examining division for further prosecution, so that it has the opportunity to reassess the invention in view of the other prior art on file. These circumstances constitute special reasons within the meaning of Article 11 RPBA 2020.

Order

For these reasons it is decided that:

The decision is set aside.

The case is remitted to the department of first instance for further prosecution.

T 1311/17 - A bona fide attempt to defend the patent

Key points

• The Board admits the new AR filed with the Statement of grounds (in this opposition appeal, by patentee).
• The Board: “contrary to the submissions of the appellant-opponent 2, "clear allowability" is not the decisive criterion for the admission of new requests filed for the first time with the statement of grounds”
• The Board: “In the light of the [course of the procedure before the OD], it cannot be said that the appellant-proprietor during the first-instance written proceedings had received a clear indication that the now disputed added subject-matter objection was a key issue for the validity of the granted claims. On the contrary, this only became clear during oral proceedings [before the OD].”
• “Only after issuance of the decision was the appellant confronted with the full reasoning of the opposition division. Subsequently, with enough time for proper consideration of their response and the knowledge of the reasoning of the opposition division, did the patentee formulate what they considered an appropriate response to the reasons given in the decision.”
• “[AR-1] is therefore regarded by the Board as an appropriate and legitimate reaction of a losing party to the impugned decision.”

EPO T 1311/17 -  link

2. First auxiliary request - Admissibility

2.1 The appellant-proprietor files this request for the first time with the statement of grounds of appeal. The admission of the new request is thus at the discretion of the Board, Article 12(4) RPBA.

In this regard the main question to be addressed is whether such a new request could and should have been submitted already in first instance. According to established case law, this issue relates to the question of whether the presenting party (the appellant-proprietor in the present case) could have been expected to present its request in the first-instance proceedings in the circumstances of the specific case, see CLBA, V.A.4.11.3.d).