T 2682/16 - Unsubstantiated requests not admitted

Key points

• In this opposition appeal, the Board decides that the claims of the main request are not inventive. The patentee had filed auxiliary requests 1-2 with the Statement of response, stating that the arguments for inventive step presented for the main requests applied mutatis mutandis  for the auxiliary requests as well. The Board does not admit these auxiliary requests in view of Article 12(2) RPBA 2007 requiring the initial appeal submissions to present a complete case. 
• “Es ist daher eindeutig, dass im vorliegenden Fall, in Abwesenheit eines Sachvortrags betreffend die erfinderische Tätigkeit, die Erfordernisse des Artikels 12 (2) VOBK 2007 in Bezug auf die Hilfsanträge 1 und 2 nicht erfüllt worden sind, und dass daher diese Hilfsanträge, wie bereits in der Stellungnahme der Kammer mitgeteilt, nicht zum Verfahren zuzulassen sind.”
• The Board had raised a clarity issue in the preliminary opinion. The Patentee had filed auxiliary requests 3-6 to address this clarity issues. The Board nevertheless does not admit these requests. The correction of the clarity issue (although as such timely) does not make the previously unsubstantiated and therefore inadmissible requests, admissible.
• “Da die früheren Hilfsanträge 3 bis 6 aus den gleichen Gründen wie die Hilfsanträge 1 und 2, nicht in das Beschwerdeverfahren hätten zugelassen werden können (siehe 4.4 - 4.5 oben), hat die Kammer entschieden, auch diese im Vergleich zum früheren Hilfsanträgen 3 bis 6 leicht veränderten Hilfsanträge 3 bis 6 nicht in das Beschwerdeverfahren zuzulassen (Artikel 12 (4) und 13 VOBK 2007).”

EPO T 2682/16 - link


3.8 Die Kammer entschied folglich, dass der Hauptantrag nicht gewährbar ist, weil er nicht mit den Erfordernissen des EPÜ im Einklang steht.

4. Zulässigkeit der Hilfsanträge 1 und 2

4.1 Die Hilfsanträge 1 und 2 wurden von der Beschwerdegegnerin erstmals mit der Beschwerdeerwiderung eingereicht. Die Beschwerdeführerin hat unter anderem ihre Zulässigkeit beanstandet.

4.2 Bezüglich der für die Einreichung dieser Anträge angegebenen Gründe wurde in besagten Erwiderung in Bezug auf die erfinderische Tätigkeit lediglich folgendes angemerkt:

"Die oben für den Hauptantrag vorgebrachte Argumentation zum Vorliegen einer erfinderischen Tätigkeit gilt mutatis mutandis für die Hilfsanträge".

Daher enthielt die Beschwerdeerwiderung der Beschwerdegegnerin keinen Sachvortrag warum der geänderte Anspruch 1 dieser Hilfsanträge die Einwände der Beschwerdeführerin in Bezug auf die geltend gemachte mangelnde erfinderische Tätigkeit ausräumen/überwinden würden.

4.3 Gemäß Artikel 12 (4) VOBK 2007 muss das gesamte Vorbringen der Beteiligten nach Artikel 12 (1) VOBK 2007 von der Kammer berücksichtigt werden, wenn und soweit es sich auf die Beschwerdesache bezieht und die Erfordernisse des Artikels 12, Absatz 2 erfüllt sind.

Gemäß Artikel 12 (2) VOBK 2007 müssen jedoch die Beschwerdebegründung und die Erwiderung den vollständigen Sachvortrag eines Beteiligten enthalten. Sie müssen deutlich und knapp angeben, aus welchen Gründen beantragt wird, die angefochtene Entscheidung  aufzuheben, abzuändern oder zu bestätigen, und sollen ausdrücklich und spezifisch alle Tatsachen, Argumente und Beweismittel anführen.

4.4 Auf diese Feststellung kann die im Schreiben der Beschwerdegegnerin vom 27. November 2019 enthaltene verspätete Ergänzung (nämlich, dass die Hilfsanträge 1 bis 6 in Erwiderung auf die Beschwerdebegründung der Beschwerdeführerin, insbesondere die im Beschwerdeverfahren erstmalig vorgebrachten Vergleichsversuche (Annex 1), eingereicht wurden und das Argument, dass das der Erfindung zugrunde liegende Problem nicht über die gesamte Breite der erteilten Ansprüche gelöst sei, adressieren, indem sie die beanspruchten Formulierungen weiter einschränken, womit, wie in der mündlichen Verhandlung erklärt, sie den Beispielen des Streitpatents näher kommen) nichts ändern.

4.5 Es ist daher eindeutig, dass im vorliegenden Fall, in Abwesenheit eines Sachvortrags betreffend die erfinderische Tätigkeit, die Erfordernisse des Artikels 12 (2) VOBK 2007 in Bezug auf die Hilfsanträge 1 und 2 nicht erfüllt worden sind, und dass daher diese Hilfsanträge, wie bereits in der Stellungnahme der Kammer mitgeteilt, nicht zum Verfahren zuzulassen sind.

4.6 Die Kammer entschied daher, die Hilfsanträge 1 und 2 nicht in das Beschwerdeverfahren zuzulassen (Artikel 12 (2) und (4) VOBK 2007).

5. Zulässigkeit der Hilfsanträge 3 bis 6

5.1 Die mit der Erwiderung zur Stellungnahme der Kammer eingereichten Hilfsanträge 3 bis 6 sind den mit der Beschwerdeerwiderung eingereichten Hilfsanträgen 3 bis 6 identisch, mit der Ausnahme einer als Reaktion zur Stellungnahme hinzugefügten Klarstellung ("bezogen auf das Gesamtgewicht des Mittels") im Wortlaut der unabhängigen Ansprüche.

5.2 Da die früheren Hilfsanträge 3 bis 6 aus den gleichen Gründen wie die Hilfsanträge 1 und 2, nicht in das Beschwerdeverfahren hätten zugelassen werden können (siehe 4.4 - 4.5 oben), hat die Kammer entschieden, auch diese im Vergleich zum früheren Hilfsanträgen 3 bis 6 leicht veränderten Hilfsanträge 3 bis 6 nicht in das Beschwerdeverfahren zuzulassen (Artikel 12 (4) und 13 VOBK 2007).

T 1657/14 - Single opposition proceedings and withdrawal opposition

Key points

• In this opposition appeal, both opponent 1 and the patentee file an appeal. Opponent 1 withdraws its opposition. Opponent 1 had submitted comments after filing its Statement of grounds and before withdrawing the opposition including the argument that E18 would be novelty destroying because it would implicitly disclose feature M9 of the claim. The OD had found the claim as granted to be not novel over E18, based on arguments that were then submitted by Opponent 2. Opponent 2 had withdrawn its opposition already during the first instance proceedings.
• “The Board's examination can consider any arguments submitted by the respondent prior to the withdrawal of the opposition (see T 629/90 and T 46/10). Despite the fact that the novelty objection based on E18 was validly raised by opponent 2, the arguments submitted by opponent 1 in this regard before withdrawal of its own opposition can be considered. Since multiple admissible oppositions initiate only a single opposition proceedings, each opponent can rely on an opposition ground duly submitted by other opponents and this ground of opposition was validly raised and substantiated as well as communicated to all parties in accordance with Rule 79(2) EPC (see T 270/94).”
• As a comment, this suggests that for opponents, there is no amendment of a party's case if they adopt arguments or attacks of the other opponents. Indeed, Article 12(4)(§1)(s.1) does not require that the 'part' was (admissibly) raised and maintained by the opponent itself in the first instance proceedings.

•  The Board also recalls that “However, equivalents which are not disclosed in a published document must not be considered in assessing novelty according to Article 54 EPC, but under the EPC are part of assessing inventive step (Article 56 EPC) according to established case law (see T 167/84 and T 517/90). The narrow concept of novelty under the EPC excludes equivalents of features which are explicitly or implicitly disclosed.”.
• I  think that more precisely, this follows from the 'gold standard' instead of the 'concept of novelty'.

EPO T 1657/14 -  link



2.4.3 The Board's examination can consider any arguments submitted by the respondent prior to the withdrawal of the opposition (see T 629/90 and T 46/10). Despite the fact that the novelty objection based on E18 was validly raised by opponent 2, the arguments submitted by opponent 1 in this regard before withdrawal of its own opposition can be considered. Since multiple admissible oppositions initiate only a single opposition proceedings, each opponent can rely on an opposition ground duly submitted by other opponents and this ground of opposition was validly raised and substantiated as well as communicated to all parties in accordance with Rule 79(2) EPC (see T 270/94).

However, the Board does not agree with the arguments of opponent 1 put forward regarding features M8 and M9. In particular, opponent 1 alleged that feature M9 would be implicitly disclosed as the skilled person would read between the lines that determining identity between displayed dose and set dose would require directly comparing a possible input parameter against the actual value of the input parameter (see pages 13 and 20 of the letter dated 7 April 2015).

[...]

2.4.5. However, equivalents which are not disclosed in a published document must not be considered in assessing novelty according to Article 54 EPC, but under the EPC are part of assessing inventive step (Article 56 EPC) according to established case law (see T 167/84 and T 517/90). The narrow concept of novelty under the EPC excludes equivalents of features which are explicitly or implicitly disclosed.

T 0905/17 - No need for a hint in the CPA

Key points

• This opposition appeal deals with inventive step.
• “The opposition division dismissed this line of argument [of the opponent] by pointing out that there was no "hint in [the closest prior art] document D4 to suppress the liner (3) and then to search for appropriate material in the prior [sic] for the pressure armours (5,6) then subjected to corrosion"”
• “The board does not find this reasoning [of the OD] persuasive because the skilled person starting from one element of the state of the art [i.e. starting from the closest prior art] and faced with the need to solve a given problem [i.e. the objective technical problem] does not necessarily need a "hint" associated with that element. Otherwise, it would never be possible to establish a lack of inventive step based on the object of a prior public use, which usually does not come with any hints. In the absence of a hint, the skilled person might still take the steps leading to the claimed subject-matter on the basis of their common general knowledge or documents belonging to the state of the art that explicitly teach a solution to the problem to be solved.”
• However, the Board still concludes that the opponent “has shown that the skilled person starting from the teaching of document D4 and wishing to simplify the design of the pipe disclosed in that document could have reached the subject-matter of claim 1. However, they have not established in a persuasive manner that the skilled person would have done so. Their argumentation appears to be based on hindsight.”

EPO T 0905/17 -  link

3.2.3 Obviousness

The appellant [opponent] argued that the skilled person contemplating the pipe of Figure 2 of document D4 would have noted that its structure was repetitive: there is a first structure formed by layers 1 and 3 and a second structure formed by layers 5, 6 and 9.

FORMULA/TABLE/GRAPHIC

The argument goes on to say that the skilled person trying to simplify the pipe design would have eliminated this repetition of structures by removing both the carcass 1 and the inner liner 3. Sheath 9 would then replace inner liner 3 and layers 5 and 6 would play the role of the carcass 1. As they are in direct contact with the fluid to be transported, said layers would be unable to bear the radial force exerted by the internal pressure of the fluid. However, document D5 provides a solution that would have led the skilled person in an obvious way to a pipe according to claim 1.

The opposition division dismissed this line of argument by pointing out that there was no "hint in document D4 to suppress the liner (3) and then to search for appropriate material in the prior [sic] for the pressure armours (5,6) then subjected to corrosion" (see page 5, first paragraph, of the decision under appeal).

T 0787/17 - Any embodiment can be used as starting point

Key points

• This is an opposition appeal case where the patentee argues that Fig. 11 of D2 is not suitable as a starting point for the problem-and-solution approach because that figure is not the closest prior art.
• The Board notes that any document in the same technical field is fundamentally suitable as the starting point if it discloses subject-matter that is developed with the same or a similar purpose as the claimed invention.
• “Grundsätzlich ist jedes Element des Standes der Technik auf dem Gebiet der Erfindung, das einen Gegenstand offenbart, der zum gleichen Zweck oder mit demselben Ziel entwickelt wurde, ein möglicher Ausgangspunkt. Einer besonderen Rechtfertigung, z.B. basierend auf Überlegungen des Fachmannes, bedarf es dazu nicht.”
• The starting point document does not need to contain a pointer to the objective technical problem.
• “Insbesondere ist die Frage, ob ein solches Element einen Hinweis zur Lösung der objektiven technischen Aufgabe enthält, für seine Wahl als Ausgangspunkt irrelevant. Dies geht schon daraus hervor, dass die objektive technische Aufgabe erst auf Grundlage des Ausgangspunktes definiert werden kann. ”.
• The Board considers claim 1 to lack inventive step over Figure 11.
• Furthermore, no reasons are necessary for taking specifically the embodiment Figure 11 as the starting point out of the numerous embodiments of D2.
• “Jedes der Ausführungsbeispiele stellt ein Element des Stands der Technik dar, das als solches dem (fiktiven) Fachmann bekannt ist und deshalb auch als Ausgangspunkt dienen kann.”.

EPO T 0787/17 -  link


Sachverhalt und Anträge

VII. Die Beschwerdeführerin [Opponent] hat Folgendes vorgetragen:


[...]
Deshalb sei die Fig. 11a im Gesamtkonzept der Druckschrift D2 sehr wohl ein Ausgangspunkt für den Fachmann, der hier die Verwendung von Hohlspiegeln als vollwertige Alternative zur Verwendung von Linsen erkenne. Er brauche auch keine Auswahlschritte vorzunehmen, sondern er suche sich ein Motiv wie das $-Zeichen der Druckschrift D2 und sei damit bei der Erfindung angelangt.

VIII. Die Beschwerdegegnerin [Patentee] hat Folgendes vorgetragen:

c) Hauptantrag: erfinderische Tätigkeit

Der Gegenstand der Ansprüche 1 und 2 sei auch erfinderisch gegenüber den Druckschriften D1, D2 und D6.

Die Druckschrift D2 befasse sich bis auf einen Absatz ausschließlich mit Sicherheitselementen, die auf der Verwendung von Mikrolinsen basieren. Nur in sechs Zeilen von Absatz [000203] bzw. in Fig. 11a sei von Hohlspiegeln die Rede. Es werde dem Fachmann dort keine vollständige Lehre geboten, wie das entsprechende Element auszugestalten sei. Es handle sich daher nur um einen ganz allgemeinen Verweis auf die Möglichkeit dieser Alternative, aber die Lehre sei nicht ausreichend, um das Element auch zu realisieren. Dieses Ausführungsbeispiel sei kein realistischer Ausgangspunkt, da es dem Fachmann keine Hinweise liefere, wie er zur Lösung der Aufgabe vorgehen solle.

Es gebe mehrere Unterschiede: die Merkmale 2-1, 2-2 und 14 bis 16 seien in der Druckschrift D2 nicht offenbart.

T 1000/19 - Debit orders can be corrected (III)

Key points

• The opponent had filed an opposition. However “[t]he electronic EPO Form 2300E, however, did not indicate any payment method in box X. "Payment". This Form rather displays in box X. the message "Not specified"”. The PDF letter included the statement that essentially a debit order was given for the opposition fee.
• The Board first notes that this remark in the PDF letter is not a valid debit order: “the ADA in force since 1 December 2017 have decisively changed the legal situation regarding the requirements for a valid payment by order to debit a fee from a deposit account at the EPO which entails that the "intention to pay"-case law developed under different previous versions of the ADA does no longer appear to be applicable.”
• However, the Board finds that the debit order can be corrected (this is the same conclusion as in J 8/19; not cited in the present case. I  note that the present decision text largely corresponds to the preliminary opinion issued 13.09.2019, i.e. before J8/19 was issued).
• “The Board fails to discern why the lines of argument set out in G 1/12 regarding the applicability of Rule 139 EPC should not equally apply to a correction of an erroneously filled payment form (T 317/19 []). Rather, the applicability of Rule 139, first sentence EPC (Rule 88, first sentence EPC 1973 respectively) to debit orders has been acknowledged or at least not ruled out by the Boards of Appeal, e.g., in T 152/82 (point 7. []) and in T 17/83 [r.6]).”
• “In contrast to T 152/85 where no document containing an error was filed, the opponent in the present case filed the electronic form EPO 2300E and hence a document in the sense of Rule 139, first sentence EPC (T 317/19, point 2.4.2.(c) of the reasons). Furthermore, the mistake was made in this document by not activating the payment method in box X. "Payment" of said EPO Form 2300E.”
• The correction is also allowed. “In the present case the mistake can be seen in an omission to activate the intended payment method in box X. of the electronic Form 2300E which by default displays the message "Not specified"”. The request was also filed without delay and sufficiently supported by evidence. 
• “Since an allowable correction has retroactive effect (G 1/12, point 37 of the reasons, last sentence) the opposition fee is found to have been validly paid within the period of nine months on 24 January 2018 when EPO Form 2300E and the accompanying letter were received by the EPO, and the opposition is deemed to have been filed pursuant to Article 99(1) EPC. The Board notes that on the basis of the file there is no reason to doubt that the professional representative's deposit account was sufficient on that date”. 
• The Board decides that the request for correction is allowed and the opposition is “deemed to have been filed”.
• I note that the Board does not comment on T170/83 (Debit Order III) holding that “the running of deposit accounts falls outside the grant or opposition procedures it is not governed by Rule 88, lst sentence, EPC.”, cited in Guidelines A-X 7.1.1. for the position that “It is not, therefore, a procedural declaration which may be corrected pursuant to Rule 139. The same applies to debit orders (see T 170/83, reasons 8).”
  
  
• Readers may be interested to learn that Bühler writes in Singer/Stauder/Luginbühl EPÜ, 8th. ed. 2019, Art.108, rdn.32, that if the reduced appeal fee is stated by mistake in a debit order, a correction under Rule 139 may provide a way out, in particular when in the Notice of appeal the debiting of the appeal fee is referred to without mentioning the amount. 

EPO T 1000/19 -  link

Reasons for the Decision

1. The appeal is admissible.

2. Since the appeal is also allowable the decision can be issued in the written proceedings without oral proceedings.

3. The present Board considers it as highly questionable whether the case law according to which under certain circumstances the "intention to pay" a fee by order to debit the amount from a deposit account with the EPO can still be regarded as a valid payment, even if the debit order is deficient, still applies under the version of the ADA in force since 1 December 2017 which is applicable to the case at issue. This case law is represented e.g. by T 1265/10, which is one of the most recent decisions and in particular discussed in the present appeal proceedings, as well as by T 152/82 of 5 September 1983 and T 806/99 of 24 October 2000.

3.1 In these decisions the "intention to pay" was accepted as valid payment of a fee under the proviso that the ADA in the version underlying the respective decision "do not preclude such a step", i.e., to carry out the debit order (T 152/82 point 4 of the reasons), "the debit order is not subject to any further formal requirement" (T 806/99 point 3.1 of the reasons), or "the ADA do not indicate what should happen in case one of the formal requirements are not complied with" (T 1265/10 point 8.1 of the reasons).

3.2 Contrary to the previous versions of the ADA underlying those cases the ADA in force since 1 December 2017 and applicable to the case at issue clearly and expressly define that the EPO will accept and process debit orders only if they are filed in an electronically processable format (point 5.1.2 ADA) using the electronic means listed therein. Furthermore, point 5.4.2 ADA explicitly provides: "If a debit order is submitted via a non-accepted means of filing or an invalid format, the date of receipt will not be regarded as the payment date."

3.3 Therefore, the ADA in force since 1 December 2017 have decisively changed the legal situation regarding the requirements for a valid payment by order to debit a fee from a deposit account at the EPO which entails that the "intention to pay"-case law developed under different previous versions of the ADA does no longer appear to be applicable. To this extent the Board cannot find fault with the Opposition Division's findings following decision T 198/16.

3.4 However, this legal question as well as the question whether the principle of legitimate expectations (good faith) applies do not need to be finally decided upon in the case at issue, since the Board considers not only that Rule 139 EPC (correction of errors in documents filed with the EPO) is principally applicable but also that its requirements are complied with.

4. Rule 139 EPC

Under Rule 139, first sentence, EPC linguistic errors of transcription and mistakes in any document filed with the EPC may be corrected on request.

Applicability of Rule 139 EPC

4.1 The Opposition Division's decision that Rule 139 EPC was not applicable in the present case, since the procedure of Rule 139 EPC was not time-barred and could therefore not be applied to the non-extendable time limit for filing a valid opposition is legally incorrect. The Enlarged Board of Appeal in decision G 1/12 (OJ EPO 2014, A 114) held that the general procedure for correcting errors under Rule 139, first sentence EPC was available in cases of an error in the appellant's name in a notice of appeal. Whether a notice of appeal in compliance with Rule 99(1)(a) EPC contains the name and address of the appellant is inextricably related to the question whether the appeal has been validly filed within the 2-months (non-extendable) time limit according to Article 108, first sentence EPC as one of the conditions for the admissibility of the appeal. There can be no doubt that the ratio of G 1/12 also applies if the admissibility of an opposition, or the question, whether an opposition is deemed to have been filed according to Article 99(1) EPC is concerned (T 615/14 of 27 October 2015, T 579/16 of 18 January 2017). Hence, Article 139, first sentence EPC is applicable in the case at issue.

4.2 Furthermore, the Board fails to discern why the lines of argument set out in G 1/12 regarding the applicability of Rule 139 EPC should not equally apply to a correction of an erroneously filled payment form (T 317/19 of 22 October 2019, point 2.3.3(c) of the reasons). Rather, the applicability of Rule 139, first sentence EPC (Rule 88, first sentence EPC 1973 respectively) to debit orders has been acknowledged or at least not ruled out by the Boards of Appeal, e.g., in T 152/82 (point 7. of the reasons: "The application of Rule 88 EPC, which is possible per se...") and in T 17/83 of 20 September 1983 (point 6. of the reasons: "it cannot be ruled out that Rule 88, first sentence EPC also applies to debit orders").

4.3 In case T 152/85 of 28 May 1986 the notice of opposition contained no reference to payment of the opposition fee and the fee was not paid in time. The Board held that the payment of an opposition fee was a factual requirement and thus the failure to pay the fee a factual mistake (point 2 of the reasons). It appeared to be clear from the wording of Rule 88 EPC that this rule only applied to mistakes made in a document but not to other kinds of mistakes (l.c.).

4.4 The present Board fully agrees with the findings in T 152/85, which however does not preclude the application of Rule 139, first sentence EPC in the case at issue. According to the clear wording of Rule 139, first sentence EPC and as pointed out in T 152/85 this provision requires that the mistake to be corrected was made in any document filed with the EPO. In contrast to T 152/85 where no document containing an error was filed, the opponent in the present case filed the electronic form EPO 2300E and hence a document in the sense of Rule 139, first sentence EPC (T 317/19, point 2.4.2.(c) of the reasons). Furthermore, the mistake was made in this document by not activating the payment method in box X. "Payment" of said EPO Form 2300E.

Requirements for corrections according to Rule 139, first sentence, EPC

4.5 In its decision G 1/12 (point 37. of the reasons) the Enlarged Board referred to the large body of case law of the Boards of Appeal on corrections under Rule 139, first sentence EPC according to which the following principles were established:

4.5.1 The correction must introduce what was originally intended (l.c., point 37(a) of the reasons). In the absence of any contrary requirement in Rule 139 EPC, the Board is not prevented from using indications of the appellant's original intention outside the document to be corrected. This is fully in line with G 1/12, where it is stated in point 28 of the reasons: "in the event of a deficiency as to the appellant's identity the Board must establish the true intention of the appellant on the basis of the information in the appeal or otherwise on file".

The Board has no doubt and finds it as sufficiently proven (G 1/12, point 37(b) of the reasons) that from the passage "we [the representative of the Opponent, Cabinet Beau de Lomenie] have today authorized the Treasure and Account Department of the EPO to debit the due opposition fee of 785 ¤ from our deposit account" in the letter accompanying the notice of opposition the clear intention of the opponent's representatives can be derived to pay the opposition fee by means of the attached EPO Form 2300E thereby taking into account the whole content of said opposition letter (see II. above).

4.5.2 The error to be remedied may be an incorrect statement or an omission (G 1/12, point 37(c) of the reasons). In the present case the mistake can be seen in an omission to activate the intended payment method in box X. of the electronic Form 2300E which by default displays the message "Not specified".

4.5.3 Finally, the request for correction must be filed without delay (G 1/12, point 37(d) of the reasons). The EPO informed the opponent/appellant with communication of 20 February 2018 (noting of loss of rights, Rule 112(1) EPC) that the opposition was deemed not to have been filed on the grounds that the opposition fee had not been paid. With letter dated 7 March 2018 the opponent requested an appealable decision on this matter and requested "that the EPO withdraw the corresponding sum from our deposit account" (page 16, second paragraph). This request, which is to be interpreted as a request for correction according to Rule 139, first sentence EPC, was hence filed about two weeks after the opponent was informed of the mistake. The request for correction is therefore considered to have been filed without delay. If, in addition, a corrected electronic debit order (new EPO Form 2300E) had been regarded as necessary by the EPO for formal purposes, the appellant should have been informed accordingly. However, it is not apparent from the file that such a demand or invitation has been sent by the EPO to the opponent/appellant.

4.6 Since an allowable correction has retroactive effect (G 1/12, point 37 of the reasons, last sentence) the opposition fee is found to have been validly paid within the period of nine months on 24 January 2018 when EPO Form 2300E and the accompanying letter were received by the EPO, and the opposition is deemed to have been filed pursuant to Article 99(1) EPC. The Board notes that on the basis of the file there is no reason to doubt that the professional representative's deposit account was sufficient on that date (Articles 5(2), 7(2) RFees in conjunction with point 5.4.1 of the ADA).

5. The board concludes that the requirements for the correction requested by the appellant are met, and thus that the correction of the error made in EPO Form 2300E regarding the payment of the opposition fee according to the ADA is to be allowed. Consequently, the correction under Rule 139 EPC having effect ex tunc, the opposition is retroactively deemed to have been filed.

Order

For these reasons it is decided that:

1. The request for correction under Rule 139, first sentence, EPC is allowed.

2. The opposition is deemed to have been filed.

T 1171/16 - Weak presumption

Key points

• The Boards clarifies that for a weak presumption of sufficiency of disclosure of a patent, it is not a necessary requirement that the patent does not give any information whatsoever on how a feature of the invention can be put into practice.
• The Board finds that in the present case, the “single embodiment and a list of possible materials for various parts of the article"  in the patent “gives a skilled person little guidance”. The Board  then remarks that “even any such "weak", presumption that might exist has, in the Board's view, already been rebutted by the [opponent's] arguments"  regarding the lack of information.

T 1171/16  - link

Reasons for the Decision

1. Article 83 EPC

1.1 In its preliminary opinion (see items 2.1 to 2.6 of the Board's communication) the Board stated that the invention according to claim 1 of the main request seemed not to be sufficiently clearly and completely disclosed in a manner such that the skilled person can perform the invention over the whole range claimed.

1.2 Since no further arguments were received in reply to its preliminary opinion, the Board sees no reason to alter its provisional opinion, which is thus confirmed herewith.

1.3 The disclosure of the patent contains a single workable embodiment (Inventive Sample 1) for putting the invention into practice and, as pointed out by the respondent, paragraph [0052] discloses that the flexibility of the material may be improved by chemically treating or mechanically working (tenderizing) the material. However, the Board finds that this alone is not sufficient to guide the skilled person to reliably obtain further embodiments falling within the whole range claimed.

1.4 The respondent argued that paragraphs [0043]-[0055], [0064]-[0066], [0084] and [0086] disclosed several possibilities of adapting an absorbent system that would allow the skilled person to modify the ratio BW/MCB and the parameters Rewet or FPT without undue burden. However, the Board does not concur.

[...]

1.8 In regard to the respondent's citation of T 63/06 and its argument that this decision would only be applicable when the patent did not provide any information, it is noted that this decision states (see Reasons 3.3.1 to 3.3.4) that only a weak presumption of validity would be present when (as explained above) "the patent specification does not contain detailed information of how to put the invention into practice". A single embodiment and a list of possible materials for various parts of the article gives a skilled person little guidance. The cited decision however, contrary to the passage cited from the Case Law Book and the respondent's argument in this regard, does not conclude that, for the burden of proof to be shifted, it is necessary for the patent not to give any information whatsoever on how a feature of the invention can be put into practice.

In the present case, even any such "weak", presumption that might exist has, in the Board's view, already been rebutted by the appellant's [opponent's] arguments regarding the lack of information as to how the parameters BW, MCB, Rewet and FTP should be modified and how these would affect each other in respect of arriving at combinations of materials falling within the whole range claimed. As a consequence, the Board finds that the respondent [patentee] indeed had the burden of proof for its contrary assertion that the disclosure in the patent and/or trial and error attempts would indeed be sufficient to enable the skilled person to obtain embodiments falling within the whole range claimed.

1.9 For the reasons above, the invention of claim 1 of the main request fails to meet the requirements of Article 83 EPC. The main request is therefore not allowable.

1.10 Claim 1 of auxiliary requests 1 to 3 has the same wording as claim 1 of the main request and thus does not meet the requirements of Article 83 EPC for the same reasons as claim 1 of the main request. Correspondingly, auxiliary requests 1 to 3 are also not allowable.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

T 0101/17 - The costs of inadmissible requests

Key points

• The Board considers the claims as granted to be not novel over D3 and does not admit the auxiliary requests. The novelty attack was already in the notice of opposition, and the OD had considered the claims to be not novel in the preliminary opinion and in the impugned decision. The patentee appeals and auxiliary requests are filed with the Statement of grounds. The Board concludes that the requests should have been filed in the first instance proceedings and does not admit them (Article 12(4) RPBA 2007).
• The opponent requests an apportionment of costs. 
• “The respondent [opponent] submitted that although the auxiliary requests were found inadmissible, it had nonetheless been necessary to prepare for the scenario that they would be admitted and to subsequently address them content-wise. This took the representative a total of 35 hours. Such time and expense could have been avoided had the appellant-proprietor refrained from filing these requests and restricted its case to a defence of the claims as granted (as would have been the proper thing to do in the circumstances).”
• The Board does not grant that request. The Board cited T1848/12: “Preparations for discussing the admission of late-filed documents into the proceedings during the opposition-appeal proceedings and, if they are admitted, preparations for discussing their relevance in respect of the patentability of the claimed subject-matter are part of the normal work that can be expected of any party to the proceedings and/or its representative in opposition-appeal proceedings.”
• I note that T1848/12 does not say that ‘preparations for discussing their relevance in respect of the patentability of the claimed subject-matter’ are ‘part of the normal work’ for inadmissible requests. T1848/12  says so explicitly only for requests that are admitted.
• I'm also not sure if the remark in T1848/12 applies to the vexatious filing of requests (though the opponent does not seem to have argued that the filing of the requests in the present appeal was vexatious or an abuse of procedure, though see below).
• The present Board adds that: “The Board further observes that in order to establish any causal link between the respondent's [opponent's] expenses and the appellant-proprietor's behaviour, the respondent [opponent] would have to show that it was particularly the belated filing of requests that caused the expense rather than the filing of requests as such. As it was the appellant's [sic, I think ' opponent'] argument that the filing of the auxiliary requests in appeal (rather than at the stage of opposition) was abusive and improper, a comparison between timely and belated filing of the requests would be necessary in order to establish causality of damage in the form of attorney's fees.”
• In my view, the comparison could more logically be made to the patentee not filing the inadmissible requests in appeal. If we assume that filing the requests in the appeal stage was unreasonable because they were clearly inadmissible, it can also be said that a diligent patentee would have refrained from filing such obviously inadmissible requests. For Article 12(4) RPBA 2007 we assume that the patentee diligently (or at least consciously) decided to not file the requests before the OD, but the present Board assumes for Art.104 that a diligently acting patentee would have filed the requests. 
• With the present Board's analysis, the late filing of (numerous) requests (or documents) appears to be a rather low-risk strategy, even if the submissions are obviously inadmissible, with clear advantages (distracting and burdening the opponent) and few disadvantages (perhaps that the Boards holds all requests inadmissible whereas they would have admitted some if only few AR's were filed). 

EPO T 0101/17 -  link

4.3 In light of the foregoing approach that the Board endorses, it might be a convenient moment to take a look at the course of opposition proceedings in this case.

Already the notice of opposition alleged a lack of novelty of the patent as granted over document D3. In its annex to the summons to oral proceedings, the opposition took the provisional view that "the subject matter of independent claim 1 of the patent-in-suit lacks novelty also over D3", amongst other documents that it also saw as novelty destroying. The decision under appeal confirmed the finding that "the subject matter of claim 1 is not novel over D3". When the opposition division came to this conclusion during oral proceedings, the protocol notes that "the chairman gave the opportunity to the patent proprietor to file further requests. The patent proprietor confirmed that it did not wish to file any further request." It was only at the stage of appeal that the appellant-proprietor decided to file requests meant to overcome a potential lack of novelty of the patent as granted, and requested that, should the Board find any of these requests novel and compliant with Art. 123(2) EPC, it remit the case to the department of first instance for further examination of inventive step issues.