T 2472/17 - Non-invasive collecting of intestinal cells

Key points

• Claim 1 reads: “A non-invasive method for collecting a sample of intestinal or bowel cells or cell fragments the method consisting of: (a) taking a swab of mucocellular layer material which originates from said bowel or intestine and is excreted during defaecation, from the surface of the anal area in the vicinity of the exterior opening of the anal canal, wherein said swab is taken following defaecation before cleaning the area, and (b) placing said swab of mucocellular layer material into a medium for sample storage or lysis"
• “The application relates to the provision of a method for collecting a sample of colorectal mucocellular layer for detecting diagnostically informative disease biomarkers ...  [this] may be crucial in detecting colorectal cancer”. 
• The Board considers the claim to be inventive and remits the case with the order to grant the patent. 
• The Board does not discuss the requirement of Articles 52 and 57 that the claimed invention should be industrially applicable. 

EPO T 2472/17 - link

4. Inventive step

4.1 The application relates to the provision of a method for collecting a sample of colorectal mucocellular layer for detecting diagnostically informative disease biomarkers (page 1, lines 6 to 9). Analysing the mucocellular layer containing exfoliated cells, cell fragments and biomolecules reflecting the state of the colorectal mucosa may be crucial in detecting colorectal cancer (page 8, lines 2 to 10).

To this end, a non-invasive method for collecting a sample of intestinal or bowel cells or cell fragments comprising taking a swab of mucocellular layer material originating from the bowel or intestine from the surface of the anal area in the vicinity of the exterior opening of the anal canal, with this swab being taken following defaecation, is taught (page 13, lines 1 to 7).

4.2 Document (2) is the closest prior art.

[...]

T 0277/17 - No procedural acts by phone

Key points

• 
  
• The Board explains that under Rule 103(4)(c) (withdrawal request oral proceedings), “any reimbursement has to be ordered ex officio by the board if the requirements of the provision are met”, no request is necessary.
• “Rule 103(4)(c) EPC refers to "the communication issued by the Board of Appeal in preparation for the oral proceedings". The provision therefore presupposes that the board has indeed issued a communication. However, in particular the provision (i) is silent on the possible content or nature of the communication except that it is "issued ... in preparation for the oral proceedings", and (ii) leaves it open whether, once a first communication has been issued in preparation for the oral proceedings, any second or further such communication re-opens the period for requesting reimbursement. However, these points, and their application in respect of the date of the entry into force of the provision, do not need to be considered further in the present case, since there are other reasons why no reimbursement of the appeal fee is to be ordered.”
• In particular, the letter with the withdrawal of the request for oral proceedings was filed after the one month period.
• “ the appellant's [earlier] statement on the telephone relating to non-attendance at oral proceedings was made outside the framework of oral proceedings, and so cannot have any legal effect”
• This is so because: “Proceedings before the boards of appeal are primarily in writing (cf. Article 12 RPBA and Rule 100(2) EPC), and any submitted document must in particular have been transmitted to the EPO in a permitted manner and validly signed (cf. Rule 2(1) and Rule 50(3) EPC). Where oral proceedings pursuant to Article 116 EPC are arranged in accordance with Rule 115(1) EPC, they take place before the board, during which a party may make procedurally relevant oral submissions.”
  
• Finally, claim 1 was considered to be unclear because “one of the features characterising the pharmaceutical aqueous solution of claim 1 of the main request is a viscosity of less than about 1000 cPs” without specifying the temperature. 
• “It is part of the basic knowledge in thermodynamics that viscosity is a function of temperature and that, in liquids, viscosity usually increases as temperature decreases. Thus, the characterisation of a liquid by a viscosity value without indicating the temperature at which viscosity has been measured makes little sense.” The applicant submitted that implicityl 20C was used, but to no avail. 
• “To the board's knowledge, there is no convention in the scientific community that when the measuring temperature of a viscosity value is not given it should be understood that it is 20°C. The convention is, rather, that because of the dependency of viscosity on temperature a viscosity value must always be accompanied by the temperature at which it has been measured.”

EPO T 0277/17 -  link




2. Main request - Clarity (Article 84 EPC)

2.1 One of the features characterising the pharmaceutical aqueous solution of claim 1 of the main request is a viscosity of less than about 1000 cPs.

2.2 It is part of the basic knowledge in thermodynamics that viscosity is a function of temperature and that, in liquids, viscosity usually increases as temperature decreases. Thus, the characterisation of a liquid by a viscosity value without indicating the temperature at which viscosity has been measured makes little sense.

Claim 1 does not indicate the temperature at which its aqueous solution is characterised by having a viscosity of less than about 1000 cPs. This introduces a lack of clarity, since a solution that fulfils the viscosity condition of claim 1 at a given temperature could not do so at lower temperatures, and vice versa. Consequently, the fact that claim 1 does not give the temperature at which viscosity is measured renders the claim unclear.

2.3 The appellant has not disputed the relationship between viscosity and temperature. Its argument was, rather, that claim 1 was clear because, in the absence of a temperature being given, the skilled person would understand that this was 20°C.

The board cannot accept this argument, which is merely an unsupported assertion. To the board's knowledge, there is no convention in the scientific community that when the measuring temperature of a viscosity value is not given it should be understood that it is 20°C. The convention is, rather, that because of the dependency of viscosity on temperature a viscosity value must always be accompanied by the temperature at which it has been measured.

2.4 Hence, the board holds that claim 1 of the main request lacks clarity, contrary to Article 84 EPC.

[...]

7. Reimbursement of the appeal fee (Rule 103(4)(c) EPC)

7.1 The appellant had initially requested oral proceedings. The request was subsequently withdrawn, enabling the board to decide on the case without holding oral proceedings.

7.2 Pursuant to Rule 103(4)(c) EPC, as in force since 1 April 2020, the appeal fee shall be reimbursed at 25% if any request for oral proceedings is withdrawn within one month of notification of the communication issued by the board in preparation for the oral proceedings, and no oral proceedings take place. The amended provision applies to any pending appeal pursuant to Article 2(2) of the Decision of the Administrative Council of 12 December 2019 amending Rule 103 EPC (CA/D 14/19, see OJ EPO 2020, A5), and thus to the present appeal case.

A request by the party concerned for a reimbursement is not a prerequisite of Rule 103(4)(c) EPC. Accordingly, any reimbursement has to be ordered ex officio by the board if the requirements of the provision are met.

Rule 103(4)(c) EPC refers to "the communication issued by the Board of Appeal in preparation for the oral proceedings". The provision therefore presupposes that the board has indeed issued a communication. However, in particular the provision (i) is silent on the possible content or nature of the communication except that it is "issued ... in preparation for the oral proceedings", and (ii) leaves it open whether, once a first communication has been issued in preparation for the oral proceedings, any second or further such communication re-opens the period for requesting reimbursement. However, these points, and their application in respect of the date of the entry into force of the provision, do not need to be considered further in the present case, since there are other reasons why no reimbursement of the appeal fee is to be ordered.

7.3 For a reimbursement of the appeal fee pursuant to Rule 103(4)(c) EPC the request for oral proceedings must have been withdrawn within one month of notification of the communication issued by the board.

The withdrawal of the request for oral proceedings by the appellant's letter received on 24 June 2020 was made too late. Calculated from notification of the communication dated 13 May 2020, receipt of the letter was outside the one-month period under Rule 103(4)(c) EPC, which had expired on 23 June 2020 pursuant to Rule 126(2) and Rule 131(2),(4) EPC.

The fact that the board was informed on 22 June 2020 - and therefore still in good time - that no one would attend the oral proceedings for the appellant did not have any legal consequences. The question which arises in this context, namely whether or not the statement of non-attendance at oral proceedings qualifies as a withdrawal of the request for oral proceedings - within the meaning of Rule 103(4)(c) EPC or in general - does not need to be addressed further.

Proceedings before the boards of appeal are primarily in writing (cf. Article 12 RPBA and Rule 100(2) EPC), and any submitted document must in particular have been transmitted to the EPO in a permitted manner and validly signed (cf. Rule 2(1) and Rule 50(3) EPC). Where oral proceedings pursuant to Article 116 EPC are arranged in accordance with Rule 115(1) EPC, they take place before the board, during which a party may make procedurally relevant oral submissions.

In the present case, the appellant's statement on the telephone relating to non-attendance at oral proceedings was made outside the framework of oral proceedings, and so cannot have any legal effect, irrespective of whether the fact that the registrar had received it could in any case be considered equivalent to receipt by the board. Nor does the fact that the registrar minuted the statement and passed it on to the board mean that it subsequently became a written submission by the appellant.

Only upon receipt of the appellant's letter on 24 June 2020 was there a procedurally relevant submission on the part of the appellant, but this fell outside the one-month period under Rule 103(4)(c) EPC.

7.4 Before arriving at the present negative findings, there was no need for the board to provide the appellant with the opportunity to comment on the question of reimbursement of the appeal fee. No request for reimbursement of the appeal fee had been submitted by the appellant, the board's conclusion instead being in conformity with such a request not having been made, so there was no request to reject. Furthermore, the question of reimbursement of the appeal fee does not entail any legal or further financial disadvantage for the appellant.

Order

For these reasons it is decided that:

The appeal is dismissed.

J 0010/19 - Interruption of proceedings

Key points

• This is an opposition case with interruption of proceedings due to insolvency of the joint proprietor. The case is procedurally difficult. 
• A share of the patent right was transferred to Solar World GmbH on 11.07.2017. This company was declared insolvent on 01.08.2017. Oral proceedings before the OD took place on 12.09.2017. The OD decided that the patent in amended for met the requirements of the EPC, written decision dated 06.11.2017. The EPO was informed about the insolvency in the course of other proceedings and issued the interruption on 04.01.2018 with retroactive effect to 01.08.2017.
• With decision T 1389/18 of 17.12.2018, the Board had dismissed the appeals of the opponent and the patentees against the decision of the OD as moot because the OD's decision was non-existent due to the interruption.
• The patentees requested on 25.01.2018 that the interruption decision be set aside, alternatively that the date of resumption of the proceedings is set on 08.08.2017.
•  The Legal Board of Appeal reasons that the declaration of the interruption of proceedings because of insolvency of the patentee is retroactive. However, it can only be cancelled with ex nunc effect. Cancelling with retroactive effect is also not possible in individual cases after balancing the interests of the parties. Rather, whether or not cancelling with retroactive effect is possible is question of law that needs to be answered in the general (my summary of the headnote).
• The Legal Board: “Eine Rückwirkung der Aufhebung der Unterbrechung würde dagegen zu einer nachträglichen Wirksamkeit der Rechtsakte führen. Dies widerspräche Sinn und Zweck der Regel 142 EPÜ, die mit der Unterbrechung des Verfahrens dem Schutz der Verfahrensbeteiligten unabhängig von ihrer Rolle im Verfahren dient und auf deren Geltung sowohl der Anmelder oder Patentinhaber und auch Einsprechende und weitere Verfahrensbeteiligte vertrauen dürfen. [....] Es bestünde die Gefahr der Fristenverkürzung oder gar des Fristablaufs zum Nachteil der betreffenden Beteiligten, wenn bei nachträglicher Feststellung selbst einer rechtswidrigen Verfahrensunterbrechung die Unterbrechungswirkung nachträglich außer Kraft gesetzt würde.”

EPO Headnote

Die Feststellung der Unterbrechung eines Verfahrens wegen der Insolvenz eines Patent(mit)inhabers erfolgt zwar regelmäßig rückwirkend. Sie kann aber nur mit Wirkung ex nunc aufgehoben werden. Eine rückwirkende Aufhebung kommt auch nicht im Einzelfall unter Abwägung der betroffenen Interessen in Betracht. Vielmehr handelt es sich dabei um eine Rechtsfrage, die allgemein zu beantworten ist.

EPO headnote translation (informal)

The finding of the interruption of the proceedings because of insolvency of a (joint) patent proprietor has retroctive effect generally. However, it can only be retracted with effect ex nunc. A retroactive retraction of an interuption is not to be considred, not even in individual cases on the balance of interests. Rather, this pertains to a legal question that is to be answered on a general level. 


EPO J 0010/19  J 10/19 -  link

Sachverhalt und Anträge

I. Die Beschwerde richtet sich gegen die Entscheidung der Rechtsabteilung, den Antrag der Beschwerdeführerin (Patentinhaberin) auf Zurücknahme der Unterbrechung des Verfahrens gemäß Regel 142 (1) b) EPÜ, hilfsweise der Festsetzung der Wiederaufnahme des Verfahrens am 8. August 2017, zurückzuweisen.

Dem liegt folgender Sachverhalt zugrunde:

II. Gegen die Erteilung des europäischen Patents 220689 wurden am 26. bzw. 27. Mai 2015 fünf Einsprüche eingelegt. Die Einsprechenden 2 und 3 haben ihre Einsprüche während des Einspruchsverfahrens zurückgenommen.

III. Mit Wirkung vom 11. Juli 2017 wurde der Rechtsübergang eines Mitinhaberanteils an dem Patent zugunsten der Solar World Innovations GmbH in das Europäische Patentregister eingetragen. Über das Vermögen dieser Gesellschaft wurde am 1. August 2017 das Insolvenzverfahren nach deutschem Recht eröffnet.

IV. Am 12. September 2017 fand vor der Einspruchsabteilung eine mündliche Verhandlung über die Einsprüche statt, und zwar ausweislich der Niederschrift unter Beteiligung verschiedener Vertreter der damals eingetragenen Patentinhaberinnen "Solar World Innovations GmbH et al." sowie der noch beteiligten Einsprechenden. Am Ende der mündlichen Verhandlung erließ die Einspruchsabteilung eine Zwischenentscheidung, nach der das Patent in eingeschränkter Form auf der Grundlage der Ansprüche des Hilfsantrags 3 den Erfordernissen des EPÜ genügte. Die Zwischenentscheidung wurde am 6. November 2017 zur Post gegeben.

T 1255/18 - Two lists principle is only an aid

 Key points

• The Board finds the claims to lack basis in the (parent) application as filed. The issue is that the claim specifies a combination of features which are only disclosed individually in the application as filed.
• The Board: “While conditions have been developed by the case law, such as the so-called "two-lists principle" (indeed starting from decision T 12/81 of 9 February 1982 in the context of the novelty analysis as cited by the appellant), they are not meant to be additional or alternative conditions to be checked, but only a possible aid in certain cases to verify whether the gold standard is satisfied and should thus not lead to a different result than when applying the gold standard directly.”
• “Allowing the various restrictions introduced into present claim 1 without there being any - even implicit - indication in the parent application as filed that the combination of newly introduced features was envisaged would be unfair to third parties. In particular, it would give an applicant who filed a broad speculative claim an unwarranted advantage over other applicants who were the first to attribute any significance to a specific combination of features encompassed by said broad original claim, e.g. a specific combination of features falling within the ambit of present claim 1 which does not overlap with the examples of the parent application.”
• The application claims the priority of a US application.

https://www.epo.org/law-practice/case-law-appeals/recent/t181255eu1.html

3. Even if the Board, to the benefit of the appellant, considered that the passages cited by the appellant provided a basis in the parent application as filed for feature (3), one could not conclude that the claimed subject-matter meets the requirements of Article 76(1) EPC for the following reasons.

3.1 The appellant did not indicate any explicit single disclosure for the claimed combination of features, but rather relied on various separate passages of the earlier application as filed relating to each of said features individually. The mere fact that each of the features of claim 1 of the main request would as such, i.e. when read in isolation, be disclosed in the earlier application as filed is not sufficient to conclude that the skilled person would implicitly derive the presently claimed combination of features directly and unambiguously from the application as filed, using common general knowledge. In this context "implicitly" means that the skilled person would have found a disclosure for said combination of features as objectively and necessarily implied by the explicit content of the application as originally filed as a whole.

J 0006/19 - Retraction of withdrawal

Key points

• The applicant withdrew an already published Euro-PCT patent application with a letter filed on 19.12.2018. On 20.12.2018, the EPO issued the Form 205 "Closure of the procedure". The withdrawal was “published in the European Patent Register early in the morning of 21 December 2018.” 
• The applicant requested a correction of the withdrawal on 21.12.2018 received at 10:57 hrs.
• The applicant submitted that the correction request was timely filed, inter alia because it was “entitled to the protection of its legitimate expectation that its request for retraction would be filed in due time because it relied on the advice given orally on 20 December 2019 by the formalities officer that this request could be filed "...within two days", i.e. until 21 December 2018”.
• The Legal Board does not allow the appeal (against the decision to refuse the requested correction).
• The Legal Board: “In this case, the withdrawal appeared in the European Patent Register early in the morning of Friday, 21 December 2018, after the publication run. The public had thus already been officially notified of the withdrawal of the application when the request for retraction of the withdrawal was received by the EPO on 21 December 2018 at 10.57 hrs. Furthermore, at the time of the official notification, the public had no reason to suspect that the withdrawal could be erroneous and later retracted. As already noted, the request for withdrawal was unqualified, unambiguous and unconditional. And the request for retraction of the withdrawal, filed on 21 December 2018, would not have been available for file inspection until at least the following day, 22 December 2018.”
• As to the argument based on legitimate expectations, the Legal Board notes the following.
• “The principle of the protection of legitimate expectations governs all procedural action taken by EPO employees vis-à-vis parties to proceedings, including telephone calls, which are not part of the formal procedure ”
What was said during the phone call was not decisive, because the Legal Board recalls that “in any case the authorised representative is expected to be aware of the relevant law and case law”.
• “In particular [representatives] are expected to know that a filed document is likely to become visible in the European Patent Register once it has been coded by the EPO (see FAQ - European Patent Register on the EPO website). In this case, Form 2058, "Closure of the procedure in respect of application n° 15848194.5", was issued on 20 December 2018. The appellant could then have expected the withdrawal to be published early in the morning of the following day, after the publication run. Thus, it was the appellant's own responsibility to file the request for retraction before the withdrawal appeared in the Register.”
• The cited FAQ is probably this one. It includes the remark that: "When will a document or correspondence become visible in the European Patent Register? For publicly available outgoing communications: on the day after the date of despatch. For publicly available incoming communications: once the filed document has been coded by the EPO. Please note that the date displayed alongside a document in the All documents view is the date of receipt by the EPO."
• Therefore the request for correction was not timely filed, according to the Legal Board.

Disclosure: my firm was involved.

EPO J 0006/19 -  link

Text of the decision omitted here because it contains personal details (names of persons involved).

T 0471/16 - Proofing

Key point

• “2.1 The appellant requested that a technical expert, Prof. [R.], be allowed to provide an expert testimony during the oral proceedings. However, the Board considers itself to be sufficiently competent to decide the merits of the case without use of the technical assistance of experts, either provided by the parties or appointed independently by the Board. The Board therefore did not proceed to the hearing of the expert.”

EPO T 0471/16 -  link

the declaration of Prof. [R.] at issue:
https://register.epo.org/application?documentId=EZE6S6J87859DSU&number=EP10728679&lng=en&npl=false

2. Hearing of technical expert

2.1 The appellant requested that a technical expert, Prof. [R.], be allowed to provide an expert testimony during the oral proceedings.

2.2 However, the Board considers itself to be sufficiently competent to decide the merits of the case without use of the technical assistance of experts, either provided by the parties or appointed independently by the Board. The Board therefore did not proceed to the hearing of the expert.

T 0633/16 - Wikipedia without version

Key points

• The Board does not admit Wikipedia citations, inter alia because “[the party has not indicated the versions of the Wikipedia extracts it refers to (e. g. the version online the day before the priority of the opposed patent or the version online the date of the statement of grounds of appeal).”
• Nevertheless, “the Board is of the view that the passages cited from these Wikipedia extracts disclose not more than the common general knowledge of the skilled person at the priority date of the opposed patent”. 

EPO T 0633/16 - link

3.2 Admission of the appellant's Wikipedia citations

The respondent requested to disregard the Wikipedia citations "Gabriel Lippmann", "Holography" and "Heat sealer" and the appellant's arguments based thereon, because they had not been cited during the opposition proceedings and were not attached as annexes to the statement of grounds of appeal (contrary to Article 12(2)(a) RPBA 2007).

The Board notes that the appellant has not indicated the versions of the Wikipedia extracts it refers to (e. g. the version online the day before the priority of the opposed patent or the version online the date of the statement of grounds of appeal). 

Neither had it attached the extracts as annexes to the statement of grounds of appeal, contrary to the requirements of Article 12(3)(a) RPBA 2020 in combination with Article 25(1) RPBA 2020. Therefore, the Board disregards these Wikipedia extracts (Article 12(4) RPBA 2007 in combination with Article 25(2) RPBA 2020). 

In any case, the Board is of the view that the passages cited from these Wikipedia extracts disclose not more than the common general knowledge of the skilled person at the priority date of the opposed patent.